Category Archives: General Information

Will Sequestration Affect the USPTO?

Will the across-the-board budget cuts required by the Budget Control Act of 2011 reduce services provided by the U.S. Patent and Trademark Office?  

In the short term, not likely.  According to the Patent Office Professional Association:

While the White House through OPM has designated the USPTO to take a $242 Million hit with sequestration, the agency should not feel a practical hit from that cut in funding.  That is because the sequestration amount is taken off of our appropriated funds.  However, we are only allowed to spend what we take in through our fee income. . . [Currently] we are funded at . . .  about 2.7 Billion.  However, our current fee income is running somewhat less than 2.5 B.  So even if we took off the 242M sequestration, it only brings us down to about what we are taking in through fees anyhow.

Because of this, patent and trademark applicants are not likely to see any immediate reductions in service.  However, given the current fiscal crisis, it’s always possible that Congress could change the rules for USPTO funding in the future.  In addition, the potential (although unlikely) prospect of a total government shutdown on March 27, 2013 would affect the USPTO just like all other “non-essential” government programs.

Executive Order declares December 24, 2012 a federal holiday

President Obama has issued an executive order that closes all executive branch offices and agencies on Monday, December 24, 2012.

For the patent and trademark community, this means that most U.S. Patent and Trademark Office filings that were due on December 24 are now due December 26, which is the next day that the USPTO will be open.

The full text of the executive order is available here.

2011 IP Year in Review

2011 was an active year in the IP news front.   14 U.S. District Courts implemented a Patent Pilot Program.   The USPTO implemented, withdrew, and then again implemented a program for fast track review of patent applications.  And, or course, the U.S. Congress passed the America Invents Act, with many significant changes to U.S. patent laws.

The good folks at Think IP Strategy have captured all of 2011’s IP news in a new publication, the 2011 IP Think Tank Almanac.  The Almanac provides day-by-day updates, with formatting to allow links to common topic or keyword-based searching.

The 2011 IP Think Tank Almanac is available from the Think IP Strategy website.

I’ve moved to Fox Rothschild LLP

I’m excited to let IP Spotlight readers know that I’ve joined the law firm of Fox Rothschild LLP.  Fox Rothschild is a full-service firm with over 500 attorneys, 16 offices ranging from New York and Florida to Los Angeles and San Francisco, and over 100 years of history. Our intellectual property practice has over 70 attorneys, including more than 40 registered patent attorneys and agents with deep technical backgrounds in a wide variety of industries.  I will reside in Fox’s Pittsburgh, PA office.

I look forward to continuing to publish news and tips about IP and business from my new location.  To reach me at Fox Rothschild, my contact information is

Watch this space

Regular readers of this blog may have noticed that over the past month or so, my posts have not been quite as frequent as usual.  Well, change is in the air at IP Spotlight, so stay tuned for an exciting announcement.  I expect to be back up to my usual blogging pace very soon.  Thanks for your patience!

World’s most famous trade secret revealed?

This week’s episode of This American Life included an interesting story about a 1979 newspaper article that appeared to reveal one of the most closely guarded trade secrets in the world:  the formula for Coca-Cola. 

In the new program, the reporters find the source of the 1979 article, and they put the formula to the test by preparing a batch and comparing it to The Real Thing.  Is it?  Listen online or download the podcast by visiting the This American Life website.

Inside Intellectual Ventures’ kitchen

What do patent attorneys and foodies have in common?  Both will enjoy the latest episode of Freakonomics Radio: “Waiter, There’s a Physicist in My Soup.”  The hosts interview Nathan Myhrvold, founder of Intellectual Ventures and author of a new book on the science of cooking. 

In the episode, Myhrvold discusses molecular gastronomy, how to make the perfect hamburger, why he cuts ovens in half, and the future of food.  Listeners also get an audio tour of the Intellectual Ventures’ corporate kitchen.  To download the episode as a podcast or to listen online, click here.

Upcoming Pennsylvania CLE courses to cover the law of social media

This month I’m involved in two Pennsylvania Bar Institute continuing legal education courses that may interest IP Spotlight readers: 

E-Commerce:  Legal and Practical Issues:  Seminar topics will include e-contracting, legal issues associated with mixing social networking and e-commerce, privacy and safeguarding client information, and a 2010 case law update.   The seminar will occur (1) December 6, 2010, live in Philadelphia and via webcast, and (2) December 16, 2010, live in Pittsburgh.

Facebook, Blogging and Twitter . . . Oh MySpace!  Seminar topics will include how to handle legal issues that social media can trigger under intellectual property law, employment law, health care law, in the context of litigation, and attorney ethical obligations.   In addition, a panel of prominent in-house counsel will discuss how their companies use (and react to) social media on a daily basis.  The seminar will occur (1) December 6, 2010, live in Pittsburgh, and (2) December 20, 2010, live in Philadelphia.

Which is more valuable: trade secrets or patents?

This month’s issue of the American Bar Association’s Landslide magazine includes a thought-provoking article about this topic.  In the article, R. Mark Halligan points out that patents have limited lifespans, are costly to enforce, and are subject to ever-shifting legal standards of patentability.  The article asks:  can trade secret protection be a better choice for many inventions? 

As with many questions, the answer is “it depends.”  When a client approaches me with an invention to patent, one of the first questions that I ask the client is “why patent this?”   The answer not only helps me draft a patent application that meets the client’s business objectives, it also helps me to ensure that the client does not file a patent application on an innovation that would be better held as a trade secret.  Because of this, it’s important that companies have processes in place to protect both patents and trade secrets as appropriate. 

Patents are valuable, but they require a trade-off in cost and disclosure.  The inventor must disclose intricate details of the invention in the patent application.  The process of getting a patent can be long and costly, especially where global protection is involved.  The prize at the end of the process is an asset which the patent-holder can then license, enforce, sell, or use as collateral to attract financing or investments.

Trade secrets, on the other hand, gain immediate protection.  Like patents, trade secrets can be licensed, and trade secret rights can be enforced.  When you protect a trade secret, you do not disclose your business processes, recipes, formulations, or other valuable information to the world. 

Although trade secret protection can be immediate and less costly than a patent, companies must not be lulled into a false sense that their secrets are secure.  A company must ensure that it has adequate legal protections (employee policies, contractor agreements, site visitor agreements, etc.) and physical safeguards (e.g., security systems, encryption) in place to keep secrets under wraps.  Trade secrets require ongoing care and protection, and companies who hold trade secrets must implement business processes and training programs to ensure that valuable information does not walk out the door. 

Last week I had the opportunity to participate in a monthly briefing of the Intangible Asset Finance Society that touched on this topic.  Roya Ghafele (formerly of WIPO and now with the University of Oxford), Mary Adams (of I-Capital Advisors) and I discussed perceptions of “IP” vs. “IPR”, and the difficulty that companies have in accounting for hidden value in IP / IP Rights.  For more information, the entire session is available as a podcast for purchase on the IAFS website.

What will the Obama Presidency mean for intellectual property?

Now that the results are in and Barack Obama will be the next U.S. president, what changes might his presidency bring for U.S. intellectual property laws?  With election day behind us, a review of pre-election reports of Obama’s IP policies may be useful.  Many of the Obama-Biden goals for IP are summarized in a fact sheet that was published on the Obama campaign website.  Even if only a few of the goals become reality, the next several years will continue to yield interesting developments in the field of IP. Continue reading